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The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Sunday, 19 July 2015

From one-time guest Kat and Class 46 trade mark blogger Laetitia Lagarde comes the second of an occasional series of blog posts from Japan, where she is spending some time imbibing the local IP experience, making friends and practising her karaoke technique. Her first offering, on product placement, can be read here. And now for the second one:

Nowadays trade marks come in
all shapes and colours, sometimes even smells, and numerous brands keeping up
with the modern times have evolved into “fluid logos”.

Strawberries' marketing power: in good taste?

In Europe, non-traditional
trade marks such as 3D signs have been problematic to register lately (see here) and it seems that EU trade mark reform (on which see the IPKat's coverage here)
will make it even more difficult to obtain protection for shapes. However, the good
news is that the new TM Directive and Regulation overall aim at granting wider
protection for non-traditional trade marks by removing the “requirement of
graphical representation” from Article 4 of CMTR -– meaning that the “smell of
ripe strawberries” (definitely rejected by the General Court in Case T-305/04) and the “taste of artificial strawberry flavour” will not be barred from registration under that ground.

It is well known that Japan
is a land of contrasts and contradictions which makes it so fascinating. So it
might be odd for some practitioners, that in such an incredibly technologically advanced nation, it was not possible to register for example, colour marks,
until April 1, 2015. An amendment to the Trade Mark Act (Act No. 127 of 1959, as amended) was introduced
in 2014 and the protection of non-traditional marks became effective as of four months ago.

Under the amended Act, “any character(s), figure(s), sign(s), three-dimensional shape(s) or
colour(s), or any combination thereof, sound(s), or other(s) specified by a
Cabinet Order, recognizable
by human perception, will be
protected as a trade mark (Article 2, Paragraph 1). Currently, protection is not
granted for olfactory, touch or taste marks but future registration could become
possible since those kinds of marks fall under the “human perception”
requirement. (see this pamphlet prepared by the JPO in Japanese).

Similarly to Europe, three-dimensional
marks can be registered more easily in Japan if their representation consists
of the configuration of goods with words marks or if they have acquired a
secondary meaning (see IP High Court Judgment 2011, JEAN PAUL GAULTIER “CLASSIQUE” perfume
bottle).
Protection for packaging per se and for colours is also possible under Japan's Unfair
Competition Prevention Act: Article 2(1) prohibits use or sale of goods likely
to cause confusion with other widely-known indications among consumers. Regarding
colour marks, like any other jurisdiction, Japan requires a sign to be not
functional, inherently distinctive or have acquired distinctiveness -in
practice the latter standard will probably need to be demonstrated to secure
rights.

The recent extension of
registrable rights was received positively since brand owners were apparently anxiously
waiting for this reform. Accordingto the Japan trademark database, currently 288 applications
for registration of “colour per se” trade marks are pending, as are 201
applications for registration of sound marks, 47 applications for
registration of motion marks, three for holograms and 142 for position marks. The JPO examiners must determine whether a trade mark fulfils both absolute and relative grounds requirements. Thus, in about 7-12 months,
applicants will discover whether the following applications have passed the test:

* Application

No.2015-029822 for ‘moving belly ripped shirt’ as a motion mark for ‘herbal medicines’. An approximate translation of the trade mark description
reads:

"Male abdomen bulges, after the button of the shirt is burst, the
abdomen is cracking up and down, the screen switches after the first half of
the until you see the cross-section (FIGS. 1 to 6), the latter part (Fig. 7 in
through 20), herbal medicines is taken in the abdomen of the cross-section,
then, how the burning out is represented. This motion trade mark, as a whole, is
about 5 seconds".

* Application No. 2015-029921 for “women's high-heeled shoes” filed by クリスチャン ルブタンor ‘Christian Louboutin’ (foreign
names are usually written in Katakana, one of the three Japanese alphabets). Eight days after
Louboutin’s application (depicted on the left), the colour trade mark on right right was applied for: Application No.2015-033058 by株式会社モ－ダ・クレア(Ltd. Mode – Da Claire) for
Class 25.

Keep a look out for these exciting new times
in trade mark practice. Personally this Kat looks forward to seeing more hologram
brands and not just hologram singers –- which have already proved popular in Japan! (=^･^=).

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